•.-~

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

JOSE MARIE VICERAL, } IPC No. 14-2017-00135 Opposer, } Opposition to :

} Appln. Serial No. 4-2016-0015004 } Date Filed: 12 December 2016

-versus­ } TM: FRIES GANDA } }

FRANCIS EDWARD PUNO, } )(M Respondent-Applicant. })(

JOSE MARIE VICERAL, } IPC No. 14-2017-00136 Opposer, } Opposition to:

} Appln. Serial No. 4-2016-0015003 } Date Filed: 12 December 2016

-versus­ } TM: RICE GANDA } }

FRANCIS EDWARD PUNO, } Respondent-Applicant. }

)(-------------------------------------------------------------------)(

NOTICE OF DECISION

TERENCIO ANGEL DE DIOS MARTIJA MACABABBAD LAW OFFICE & CHIPECO LAW OFFICES Counsel for Respondent-Applicant Counsel for Opposer Rm. 152615 F City and Land Megaplaza Suite 401A ITC Building ADB Ave. cor. Garnet Rd., Ortigas Center 337 Sen. Gil Puyat Avenue Pasig City Makati City

MR. FRANCIS EDWARD PUNO Respondent-Applicant #41 Lancaster Street Hillsborough Alabang Village Muntinlupa City

GREETINGS:

Please be informed that Decision No. 2019 - 8-3 dated 03 July 2019 (copy enclosed) was promulgated in the above entitled case .

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, 03 July 2019.

ffi~M~ Atty. M~ANNE A. ISABEDRA IPRS IV, Bureau of Legal Affairs

@ www.ipophilgov.ph Intelle ctual Propert y Cente r 1128 Upp er McK in ley Road

e mail@ipophil.gov.ph McK inley Hill Tow n Center e +632-2386300 Fort Bonifacio . Taguig City

+63 2·5539480 1634 Philippines

-. INTELLECTUALPROPERTY

OFFICE OF THE PHILIPPINES

JOSE MARIE VICERAL Opposer,

-oersus-

FRANCIS EDWARD PUNO, Respondent-Applicant,

Jr------------------------------------------------------Jr

JOSE MARIE VICERAL Opposer,

-versus-

FRANCIS EDWARD PUNO, Respondent-Applicant,

Jr------------------------------------------------------Jr

DECISION

IPC No. 14-2017-00135

Opposition to: App No.: 4-2016-0015004 Date Filed: 12 December 2016 TM: "FRIES GANDA"

IPC No. 14-2017-00136

Opposition to: App No.: 4-2016-0015003 Date Filed: 12 December 2016 TM: "RICE GANDA"

Decision No. 2019- V

JOSE MARIE VICERALl ("Opposer") filed an Opposition to Trademark Application Serial Nos. 4-2016-0015004 and 4-2016-0015003. The application, filed by FRANCIS EDWARD PUN02 ("Respondent-Applicant") covers the mark "FRIES GANDA" and "RICE GANDA" for use on "kiosk (food cart purposes)" both under Class 35 of the International Classification of goods-

The Opposer alleges the following grounds:

"l. THE INTENDED MARKS "FRIES GANDA" AND "RICE GANDA" OF

RESPONDENT-APPLICANT IS CONFUSINGLY SIMILAR TO THE MARK "VICE

GANDA" BELONGING TO THE OPPOSER. AS A MATTER OF FACT, THE IPO HAD

ALREADY ALLOWED THE REGISTRATION OF THE TRADEMARK "VICE

GANDA" PREVIOUS TO THE FILING OF THE APPLICATION OF THE LABEL OF

I A corporation duly organized and existing under the laws of the State of Delaware, with its principaloffice at 2600 Tenth Street, Berkeley, California94710, UnitedStates of America. 2 A domestic corporationwith business address at The Perfect Pint, 2/F Crossroads RetailsStrip, 32""Street. Bonifacio Global City, Taguig City. 3 The Nice Classification is a classification of goods and services for the purposeof registering trademark and service marks, based on the multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the International Classificationof Goods and Services for the Purpose of the Registration of Marks concluded in 1957.

www.ipophil.gov.ph o Intellectual Property #28 Upper Mc Kinl e Road Mckinley Hill Town ent er

e mail@ipophil.gov.ph

o +632-2386300 Fort Bonifacio. Taguig City

+632-55394 80 1634 Philippines

enter

THE OF THE MARKS "FRIES GANDA" AND "RICE GANDA" OF RESPONDENT­

APPLICANT. THE REGISTRATION OF THE LABELS "FRIES GANDA" AND "RICE

GANDA" , THEREFORE, WOULD MOST LIKELY DECEIVE THE PUBLIC TO THE

DAMAGE AND PREJUDICE OF THE OPPOSER AND HER REGISTERED MARK

"VICE GANDA" .

"11. THE REGISTRATION OF THE MARKS "FRIES GANDA" AND "RICE

GANDA" WILL SURELY CUT ACROSS, TO THE DAMAGE AND EXTREME

PREJUDICE OF THE OPPOSER AND HER REGISTERED MARK "VICE GANDA",

SECTION 123 OF THE INTELLECTUAL PROPERTY CODE (lP CODE), WHICH

PROVIDES, IN PART, THAT A MARK CANNOT BE REGISTERED IF IT:

(D) IS IDENTICAL WITH A REGISTERED MARK BELONGING TO A

DIFFERENT PROPRIETOR OR A MARK WITH AN EARLIER FILING OR

PRIORITY DATE, IN RESPECT OF:

1. THE SAME GOODS OR SERVICES, OR

II. CLOSELY RELATED GOODS OR SERVICES, OR

III. IF IT NEARLY RESEMBLES SUCH A MARK AS TO BE LIKELY TO

DECEIVE OR CAUSE CONFUSION;"

Opposer's evidence consists of the following:

1. Copy of the Certificate of Trademark Registration No. 4-2014-00010993 for the mark VICE issued on 10 December 2015; and 2. Copy of the Certificate of Trademark Registration No. 4-2014-00009988 for the mark VICE GANDA issued on 18 December 2014.

On 22 May 2017, this Bureau issued a Notice to Answer and served personally to Respondent-Applicant on 02 June 2017. However, despite receipt of the Notice, Respondent-Applicant failed to file the answer. On 03 July 2017, Respondent­Applicant filed the Answer. In the Answer, Respondent-Applicant argued that his marks "FRIES GANDA" AND "RICE GANDA" are not confusingly similar to Opposer's mark VICE GANDA under the "Idem Sonans Test". According to Respondent-Applicant, the Idem Sonans Test is not sufficient basis to find that the two marks are confusingly similar. There must be other visual factors that should support such contention. Respondent-Applicant pointed out that Opposer did not attach any visual factor that would support the claim that the intended marks "FRIES GANDA" and "RICE GANDA" are confusingly similar to "VICE GANDA" belonging to Opposer. The reliance of Opposer on the similarity of pronunciation of the contending marks is not sufficient to create the presumption of "confusing similarity". Respondent-Applicant also claims that there is a stark dissimilarity between his merchandise from that of the Opposer. Moreover, Opposer cannot claim exclusive right over the word "vice" and II ganda".

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Pursuant to Office Order No. 154, s. 2010, the case was referred to the Alternative Dispute Resolution ("ADR") for mediation on 12 July 2017. However, the parties failed to settle their disputes. On 07 September 2018, the Opposer filed a Motion for Consolidation of Cases praying that IPC No. 14-2017-00135 and IPC No. 14-2017-00136 be consolidated, which was granted. During the preliminary conference on 17 January 2019, there being no other issues to be resolved, the parties agreed to terminate the preliminary conference. Consequently, they were directed to submit their position papers. On 15 February 2019, Respondent­Applicant filed its Position Paper while Opposer did son on 27 February 2019. Hence, the case is now ripe for resolution.

Should the Respondent-Applicant's JJFRIES GANDA" and RICE GANDA" marks be allowed registration?

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others." A trademark is an intellectual property deserving protection by law. In trademark controversies, each case must be scrutinized according to its peculiar circumstances, such that jurisprudential precedents should only be made to apply if they are specifically in point."

Section 134 of Republic Act No . 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"), as amended, provides:

Section 134. Opposition . - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application.

Records will show that at the time Respondent-Applicant filed his application for registration of the marks "FRIES GANDA" and "RICE GANDA" on 12 December 2016, the Opposer already has existing registration for its VICE and VICE GANDA marks issued on 10 December 2015 and 18 December 2014, respectively. As such, pursuant to Section 1386 of the IP Code, Opposer's certificate of registration is a prima facie evidence of the its ownership of the mark, and his exclusive right to use the same in connection with the goods or services specified in the certificate and those that are related thereto. And further, pursuant to Section 1477 of the IP Code, he has a right to oppose the herein subject application for registration of Respondent-Applicant's "FRIES GANDA" and "RICE GANDA" marks as he

J Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009, 605 SCRA 523, 528; McDonalds Corporation v. MacJoy Fastfood Corporat ion, G.R. No. 166115, February 2, 2007 ,514 SCRA 95, 107. ~ Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493 SCRA 333, 356. 3 ~

stands to be damaged and prejudiced if and when it is determined that Respondent­Applicant's marks are confusingly similar to the VICE AND VICE GANDA marks.

Corollary, Section 123.1 (d of the IP Code provides:

Section 123. Registrability. - 123.1. A mark cannot be registered if it:

xxx

(d) Is identical with a registered mark belonging to a different proprietor or a mark

with an earlier filing or priority date, in respect of:

i. The same goods or services, or ii. Closely related goods or services, or iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;

In determining the registrability of a mark, the most important element is the existence of resemblance (colorable imitation) of the subject mark to a mark already registered or which has priority rights, which would likely cause confusion, mistake or deception on the part of the public. Absent any finding of its existence, there can be no likelihood of confusion.f

Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article."

Also, in determining similarity or dissimilarity, lithe practical approach is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of the prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. Some such

6 Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or servicesand those that are related theretospecified in the certificate. 7 Section 147. Rights Conferred. - 147.1. The owner ofa registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registeredwheresuch use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusionshall be presumed. 147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1 (e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further. That the interests of the owner of the registered mark are likely to be damaged by such use. 8 Seri Somboonsakdikul v, Orlane S.A., Gr. No. 188996, promulgated on 01 February2017. • Emerald Garments ManufacturingCorporationvs. Court of Appeals, G.R. No. 100098. December29,1995

4

factors as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling and pronunciation, of words used; and the setting in which the words appear" may be considered.t'l''

The representative images of Opposer's and Respondent-Applicant's marks culled from the filewrapper are reproduced below:

VICEGANDA *Opposer's Marks

4-2016-0015004 4-2016-0015003

Respondent-Applicant's Marks

The apparent similarity in the contending marks is the use of the word "ganda" which means "pretty. In order to come up with the mark FRIES GANDA and RICE GANDA, Respondent-Applicant dropped the word "VIC£'! of the Opposer's VICE GANDA and replaced it with the word "FRIES" or "RICE". However, adding, removing or changing some letters of a registered mark cannot avoid confusion." Respondent-Applicant's mark also contains the images of rice bowl for the RICE GANDA mark and a French fries for the FRIES GANDA mark. But these devices or images do not make the marks more distinctive as they merely suggest or illustrate the goods upon which Respondent-Applicant's marks will be used. It will not cause to evade a finding of likelihood of confusion on the part of the buying public. Moreover, Respondent-Applicant failed to show a reasonable explanation as to how he was able to come up with the FRIES GANDA and RICE GANDA marks. As such, it can be fairly presumed that he found his inspiration from Opposer's screen name VICE GANDA. Opposer is one of the most popular TV and film personality in the country and because of his popularity, the use of his name VICE GANDA magnetizes the public into patronizing his products as well as other products and services that he endorses.

10 Etepha v. Director of Patents, G.R. No. L·20635, 31 March 1966 11 Societe Des Produits Nestle, S.A v. Court of Appeals, G.R. No.1 12012, 4 Apr. 2001, 356 SCRA 207, 217.

Further, Respondent-Applicant's marks FRIES GANDA and RICE GANDA are also aurally the same to that of Opposer's VICE GANDA mark. Trademarks are designed not only for the consumption of the eyes, but also to appeal to the other senses, particularly, the faculty of hearing. Thus, when one talks about the Opposer's trademark or conveys information thereon, what reverberates is the sound made in pronouncing it. Where goods are advertised over the radio, similarity in sound is of special significance. The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear.

Time and again, it has been ruled that the determinative factor in a contest involving registration of trademark is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of the mark would likely cause confusion or mistake on the part of the buying public. The law does not require that the competing marks must be so identical as to produce actual error or mistake. It would be sufficient that the similarity between the two marks is such that there is possibility of the older brand mistaking the newer brand for it.12

There is also the matter of confusion of business. In Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft,B the Court distinguished the two types of confusion:

Callman notes two types of confusion. The first is the confusion of goods "in

which event the ordinarily prudent purchaser would be induced to purchase one

product in the belief that he was purchasing the other." In which case, "defendant's

goods are then bought as the plaintiff's, and the poorer quality of the former reflects

adversely on the plaintiff's reputation." The other is the confusion of business: "Here

though the goods of the parties are different, the defendant's product is such as might

reasonably be assumed to originate with the plaintiff, and the public would then be

deceived either into that belief or into the belief that there is some connection between

the plaintiff and defendant which, in fact, does not exist."

In the case of Opposer and Respondent-Applicant, if and when the latter's marks are allowed registration, there can be a confusion of business. Although Opposer's mark is used on different goods and services as that of Respondent­Applicant's goods where he intends to use the marks FRIES GANDA and RICE GANDA, there is that likelihood also that the public, especially with the popularity of Opposer's name among consumers of all ages, will be confused into believing that Respondent-Applicant's goods bearing the mark FRIES GANDA and RICE GANDA originated, sponsored or otherwise associated with Opposer. The public would

12 American Wire & Cable Company Vs. Director Of Patents [G.R. No. L-26557. February 18, 1970.] I ) G.R. No. L-19906, April 30, 1969 citing 2 Callmann, op. cit., pp. 1323-1324 .. Cited also in Societe des Produits Nestle SA, G.R. No. 172276, August 8, 20 I0

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likely believe that there is some connection between VICE GANDA and Respondent­Applicant's FRIES GANDA and RICE GANDA, when in fact, there is none.

In Sta. Ana v. Maliwat, et. A1.l4, the Supreme Court ruled:

Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trade mark or trade-name is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business.

WHEREFORE, premises considered, the instant oppositions are hereby SUSTAINED. Let the filewrapper of Trademark Application Serial Nos. 4-2016­0015004 and 4-2016-0015003, together with a copy of this Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

Taguig City, o3 'JUl 2019 _

MA~TA~.~A Adj dication O~icer

Bure u of Legal Affairs

,. G.R. No. L-23023. August31, 1968 7